Category: Consumer & Retail

1
U.S. Court finds Adidas’ Stan Smith shoe trade dress protectable
2
A favourable opinion for the owners of exclusive brands – Does selective distribution guarantee that the luxury image of a brand is maintained?
3
If and how to restrict the distribution of bot-programs for online-games – The “World of Warcraft II” Decision, Germany
4
Louis Vuitton Seeks Supreme Court Review to Resolve Purported Circuit Split on Trademark Dilution
5
UK Appointed Person gives first decision in registered design appeal
6
Kardashian #copyright saga
7
“Vespa” scooters win twice against counterfeiting – Piaggio wins two lawsuits in a month
8
U.S. Supreme Court Rules that Cheerleader Uniform Elements May Be Eligible for Copyright Protection
9
Importance of Renown and Proof Thereof
10
An Apple a Day Doesn’t Keep Litigation at Bay

U.S. Court finds Adidas’ Stan Smith shoe trade dress protectable

It’s game, set, match for Adidas when it comes to the protectable trade dress in its iconic Stan Smith tennis shoe. In a dispute between Adidas and Skechers over the “Skecherizing” of the Stan Smith shoe, the District Court for the District of Oregon denied Skechers’ motion for summary judgment finding that Adidas could show it has protectable trade dress in its well-known shoe design because the design was recognizable to consumers and not functional. Adidas America Inc. et al. v. Skechers USA Inc., D. Or (August 3, 2017) (order granting in part and denying in part motion for summary judgment).

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A favourable opinion for the owners of exclusive brands – Does selective distribution guarantee that the luxury image of a brand is maintained?

On 26 July 2017, the advocate general of the EU Court of Justice issued a very interesting opinion of benefit to the owners of exclusive brands. The dispute the opinion addresses has been going on for many years between the companies Coty German GmbH (“Coty”) – a leading supplier of luxury cosmetic products in Germany – and Parfümerie Akzente GmbH (“Parfümerie Akzente”) – an authorized distributor of those products. It concerns the possibility of a supplier prohibiting authorized entities involved in further selling in a selective distribution system from using unauthorized third companies.

The EU Court of Justice will have to consider whether, and within what scope, selective distribution systems for luxury and prestige items that primarily ensure the “luxury image” of those goods constitute an element of competition pursuant to Article 101 par. 1 of the Treaty on the Functioning of the European Union (TFEU).

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If and how to restrict the distribution of bot-programs for online-games – The “World of Warcraft II” Decision, Germany

Early in 2017, the German Federal Court of Justice (FCJ) rendered a judgment in relation to the distribution of automation software (“bot-programs”) for the computer game “World of Warcraft”. The claimant developed and owns all rights to the popular online computer game “World of Warcraft”, which it distributes on the Internet. Furthermore, he is the owner of the trademarks “WORLD OF WARCRAFT” and “WOW”. To play the game, users have to acquire client software and register on a server. In the course of registration, the user has to accept the general license terms as well as terms of use of the claimant. The terms of use of the claimant prohibit the use of bot-programs by the user.

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Louis Vuitton Seeks Supreme Court Review to Resolve Purported Circuit Split on Trademark Dilution

Louis Vuitton recently petitioned the U.S. Supreme Court to review a Second Circuit ruling that certain handbags are fair-use parodies of Louis Vuitton products, and therefore do not give rise to liability for trademark dilution by blurring. In its petition, Louis Vuitton contends there is a split of authority between the Second and Fourth Circuits regarding parody as a fair-use defense to dilution.

Louis Vuitton is the owner of famous trademarks “that immediately bring… to mind Louis Vuitton as the sole source of handbags and other stylish, high-quality goods bearing its marks.” My Other Bag, Inc. offers handbags with images of Louis Vuitton’s famous marks reproduced on one side, and the phrase “My other bag” inscribed on the back.

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UK Appointed Person gives first decision in registered design appeal

The first decision on an appeal to the Appointed Person under a new regime for designs has been issued. The appeal in this first case was against a decision by a hearing officer for the IPO to invalidate two registered designs consisting of a garment with a modified Union flag on the chest, in response to a request from a competitor of the rights owner.

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Kardashian #copyright saga

Is this the right angle?
Is this the best filter?
Do I have the legal right to post this content?

While the first two questions may be at the forefront of the mind of social media users, the third is arguably as important as the pressure to push content to followers mounts in a saturated market. It is all too easy to download, screen-shot or take a photo of an image and share it across many platforms, however, taking a laissez-faire attitude to copyright ownership can land social media users in hot water.

Not only is uploading and sharing content protected by copyright a breach of the terms of use of most social media platforms (and could lead to a  user’s accounts being suspended or terminated in some cases) but it may also lead to copyright litigation, as Khloe Kardashian recently discovered.

Last week, Xposure Photos UK LTD, an “international celebrity photo agency”, filed proceedings against Ms Kardashian in the Central District Court of California alleging that she had infringed its copyright in an image that was posted to her Instagram® account.[1]  The image in question had originally been licensed to The Daily Mail and contained a copyright notice “© XPOSUREPHOTOS.COM”. The version of the image that appeared on Ms Kardashian’s account did not contain this notice nor any acknowledgement of Xposure Photos. The unauthorised removal of the copyright notice attracts 17 US Code § 1202 -1203 which provide the basis for a civil action for such conduct. In addition to seeking an injunction to prevent Ms Kardashian from using the image, Xposure Photos is also seeking US$25,000 in statutory damages as well as any profits resulting from the infringement.

While this is arguably small change for Ms Kardashian (who allegedly earns up to US$250,000 for a sponsored post on her social media sites), once legal costs and any time invested in litigation or negotiating a settlement is considered, it seems a hefty price to pay for failing to obtain an appropriate licence from the copyright owner. It is a timely reminder to social media users to ensure that they have the appropriate rights to the content they intend to use.

  1. Xposure Photos UK Ltd v Khloe Kardashian et al, 2:17-CV-3088 (C.D. Cal).

By: Jaimie Wolbers

“Vespa” scooters win twice against counterfeiting – Piaggio wins two lawsuits in a month

In just a few weeks, Piaggio – the Italian company manufacturing iconic Vespa scooters – obtained a double victory before Italian courts both under the intellectual property and the copyright perspectives.

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U.S. Supreme Court Rules that Cheerleader Uniform Elements May Be Eligible for Copyright Protection

Yesterday, in a decision that will be welcomed by the fashion industry, the United States Supreme Court ruled that certain design elements of cheerleader uniforms may be eligible for copyright protection.  Star Athletica, L.L.C. v. Varsity Brands, Inc.  The Court held that, “a feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.”  Justice Clarence Thomas authored the 6-2 majority opinion, addressing disagreement among lower courts as to the proper test for determining if certain design elements could ever qualify for copyright protection.

This case involved lines, chevrons, and colorful shapes on cheerleader uniforms. In finding that these elements could be covered by copyright, the appeals court below had identified nine different approaches that various courts and the Copyright Office had employed over the years to address “separability.” The appeals court fashioned its own test and found that the design features of Varsity Brands’ cheerleader uniform played no role in the overall function of the article as a cheerleading uniform, and the elements were separable from the utilitarian aspects of the uniform and thus eligible for copyright protection.

The Supreme Court affirmed.  Applying § 101 of the Copyright Act, the Court found that the decorations on the uniforms at issue could be identified as having pictorial, graphic, or sculptural qualities, and the arrangement of the decorations could be placed in another medium (e.g. placed on a painter’s canvas) without replicating the uniforms themselves.  Thus, the two-dimensional work of art fixed in the uniform fabric met both the separate-identification and independent-existence requirements of the statute. Importantly, the Court held only that the uniform elements are eligible for protection in concept; now the trial court must determine whether Varsity Brands’ specific lines, chevrons, and shapes are original enough to merit copyright protection.

Justice Ruth Bader Ginsburg concurred in the result, pointing out that the Court did not have to discuss the separability test at all because the designs at issue were not themselves useful articles, but rather standalone, two-dimensional pictorial and graphic works reproduced on a useful article.  Justice Stephen Breyer, joined by Justice Anthony Kennedy, dissented, arguing that even under the majority’s test, the designs cannot be perceived as separate from the cheerleading uniform.

Thus, although the majority offers some clarity about the proper approach to separability, the dissent demonstrates that analysis may yield divergent results.  The decision is likely to be embraced by fashion industry leaders and other garment design stakeholders for its recognition that certain garment design elements may be protectable under the Copyright Act.  K&L Gates will continue to monitor litigation in this area and provide updates.

A link to the opinion can be found here: https://www.supremecourt.gov/opinions/16pdf/15-866_0971.pdf

By: David Byer, John Cotter, Shamus Hyland and Eric Lee

Importance of Renown and Proof Thereof

In a ruling on 1 September 2016, the EU General Court invalidated a ruling of the European Union Intellectual Property Office (EUIPO) Board of Appeal in a case begun by a submission for the registration of a trademark showing an animal from the cat family leaping. The applicant was the Italian company Gemma Group Srl with its registered office in Cesarola Ausa. An objection was lodged by Puma SE with its registered office in Herzogenaurach, Germany.

The applicant submitted the following graphic mark for registration:

for machines for processing wood, aluminum, and PCV.

The plaintiff based its argumentation on two earlier international trademarks:

Those marks were registered for numerous types of goods in general use, including bags, clothing, accessories, footwear, toys, and sports equipment.

In addition, Puma SE raised the argument of the renown of its marks in all EU member states and for all goods covered by the registration. The objection was based mainly on the renown of those marks. In accordance with Article 8 paragraph 5 of Regulation No. 207/2009, a trademark similar to an earlier renowned mark is not registered if the unjustified use of that mark would result in undue benefits being reaped, or would harm the distinctiveness or renown of the earlier mark.

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An Apple a Day Doesn’t Keep Litigation at Bay

Victoria’s Supreme Court of Appeal has granted Apple and Pear Australia Limited’s (APAL) appeal in relation to their dispute with Pink Lady America LLC (PLA) over the refreshed “flowing heart” Pink Lady composite trade mark used in association with everyone’s favourite apple variety.[1],[2]

The dispute brought to light a number of crunchy commercial contract issues relating to agreements between APAL, PLA and the International Pink Lady Alliance (Alliance) that dealt with rights to particular trade marks registered in Chile (one of the key growing regions for the Cripps Pink and Rosy Glow apple varieties which are sold under the “Pink Lady” brand). PLA left the Alliance in June 2010.

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